USPTO Patents Application 10822509

UNITED STATES DEPARTMENT OF COMMERCE
I nind Stall-, Patent and Trademark Office

( MM] l- OKl'Ml \

APPLICATION NO. | FILING DATE [ FIRST NAMED IX\'ENTOR | ATTORNEY DOCKET NO. | CONFIRMATION NO. |

10/822,509 04/12/2004 Parmeshwar Gobin COS97104C1 3054

EXAMINER |
ADE, OGER GARCIA
ART UNIT | PAPER NUMBER ~ j

NOTIFICATION DATE | DELIVERY MODE ~[
08/11/2010 ELECTRONIC

Please find below and/or attached an Office communication concerning this application or proceeding.

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Application Number: 10/822,509
Filing Date: April 12, 2004
Appellant(s): GOBIN ET AL.

Phouphanomketh Ditthavong
For Appellant

EXAMINER'S ANSWER

This is in response to the appeal brief filed on 05.28.2010 appealing from the Office
action mailed 12.09.2009.

Application/Control Number: 10/822,509
Art Unit: 3687

Page 2

(1) Real Party in Interest

The examiner has no comment on the statement, or lack of statement, identifying
by name the real party in interest in the brief.

(2) Related Appeals and Interferences

The examiner is not aware of any related appeals, interferences, or judicial
proceedings which will directly affect or be directly affected by or have a bearing on the
Board's decision in the pending appeal.

(3) Status of Claims

The following is a list of claims that are rejected and pending in the application:
21-29. Claims 21-39 are rejected under 35 U.S.C. 102(e) as being anticipated by
Barry et al.

(4) Status of Amendments After Final

The examiner has no comment on the appellant's statement of the status of
amendments after final rejection contained in the brief.

(5) Summary of Claimed Subject Matter

The examiner has no comment on the summary of claimed subject matter
contained in the brief.

(6) Grounds of Rejection to be Reviewed on Appeal

The examiner has no comment on the appellant's statement of the grounds of
rejection to be reviewed on appeal. Every ground of rejection set forth in the Office
action from which the appeal is taken (as modified by any advisory actions) is being
maintained by the examiner except for the grounds of rejection (if any) listed under the

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Art Unit: 3687

subheading "WITHDRAWN REJECTIONS." New grounds of rejection (if any) are
provided under the subheading "NEW GROUNDS OF REJECTION."

(7) Claims Appendix

The examiner has no comment on the copy of the appealed claims contained in
the Appendix to the appellant's brief.

(8) Evidence Relied Upon

US 6,61 5,258 Barry et al. 9-2003

(9) Grounds of Rejection

The following ground(s) of rejection are applicable to the appealed claims:
Claim Rejections - 35 USC § 101

35 U.S.C. 101 reads as follows:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.

Claim 26 is rejected under 35 U.S.C. 101 . Based on Supreme Court precedent
and recent Federal Circuit decisions, a 35 U.S.C § 101 process must (1) be tied to a
particular machine or (2) transform underlying subject matter (such as an article or
materials) to a different state or thing. In re Bilski et al, 88 USPQ 2d 1385 CAFC
(2008); Diamond v. Diehr, 450 U.S. 175, 184 (1981); Parker v. Flook, 437 U.S. 584, 588
n.9 (1978); Gottschalk v. Benson, 409 U.S. 63, 70 (1972); Cochrane v. Deener, 94 U.S.
780,787-88 (1876).

An example of a method claim that would not qualify as a statutory process
would be a claim that recited purely mental steps. Thus, to qualify as a § 101 statutory

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Art Unit: 3687

process, the claim should positively recite the particular machine to which it is tied, for
example by identifying the apparatus that accomplishes the method steps, or positively
recite the subject matter that is being transformed, for example by identifying the
material that is being changed to a different state.

There are two corollaries to the machine-or-transformation test. First, a mere
field-of-use limitation is generally insufficient to render an otherwise ineligible method
claim patent-eligible. This means the machine or transformation must impose
meaningful limits on the method claim's scope to pass the test. Second, insignificant
extra-solution activity will not transform an unpatentable principle into a patentable
process. This means reciting a specific machine or a particular transformation of a
specific article in an insignificant step, such a data gathering or computing, is not
sufficient to pass the test.

Examiner determines that the claim constitutes insignificant extra-solution activity
because the step(s) constitute mere data transmission or recordation. Accordingly,
claim 26 remains unpatentable under 35 U.S.C. 101 because the insignificant extra-
solution steps, for example: "generating a response message containing the invoice
document based on the retrieved invoice data; and forwarding the response message to
the host for display for the invoice document via a downloadable program and etc."
are incapable of imparting parent-eligibility under §101. (For further guidance see also
the USPTO Memorandum "Guidance for examining Process Claims in view of In re
Bilsk?' dated 7 January 2009).

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Art Unit: 3687

Examiner suggests including some type of machine or apparatus in the
insignificant extra-solution steps.

Dependent claims 27-30 do not correct the above deficiencies and based on
their dependency on claims 26, are likewise rejected as being directed to non-statutory
subject matter.

Claim Rejections - 35 USC § 102

The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -

(e) the invention was described in (1) an application for patent, published under section 122(b),
by another filed in the United States before the invention by the applicant for patent or (2) a
patent granted on an application for patent by another filed in the United States before the
invention by the applicant for patent, except that an international application filed under the treaty
defined in section 351(a) shall have the effects for purposes of this subsection of an application
filed in the United States only if the international application designated the United States and
was published under Article 21(2) of such treaty in the English language.

Claims 21-39 are rejected under 35 U.S.C. 102(e) as being anticipated by Barry
et al. [US 6,615,258].

As per claims 21, 26, 31, and 36, Barry discloses a plurality of interfaces
configured to communicate with a plurality of billing systems to retrieve invoice data [as
illustrated in figure 25, which is a data flow diagram for various transactions
communicated in the system].

- a conversion module configured to compress the invoice data for storage in a
database and to create key information for retrieving the compressed invoice data within
the database [see at least column 46: lines 8-15 (e.g. When data is available from

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Art Unit: 3687

these billing systems, the online invoicing server typically performs a conversion
process and stores the converted data on tape until an audit approval)],

- an invoice processing module configured to receive a request message from a
host for an invoice document [see at least column 46: lines 30-45 (e.g. The client
component of the online invoicing includes a client interface for the user to select
what data to retrieve. The data is then retrieved through various application
processing, and a list of invoices and reports are provided for the user to choose
from for online viewing)], to access the database for retrieval of invoice data
corresponding to the invoice document in response to the request message [as
illustrated in figure 7 (e.g. a process running in a OE client application process 154
sends transaction request messages via the infrastructure)],

- communicating with a plurality of billing systems to retrieve invoice data [see
summary of the invention (e.g. separate client applications may communicate with
one another and with the backplane unit)]; converting, in a processor, the retrieved
invoice data by compressing the invoice data for storage in a database and creating key
information for retrieving the compressed invoice data within the database [as indicated
at steps 630 and 632, via the DSS IAIO reads the header to determine which Data Mart
will ultimately be queried. It then parses the metadata into a format which the COTS
software can readily convert into a SQL query, as indicated at step 635, FIG. 73(b)] ;
accessing the database for retrieval of invoice data corresponding to the invoice
document in response to the request message [see summary of the invention (e.g. a

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Art Unit: 3687

Web-based invoice reporting system allowing the customers access to their billing
and invoice reports associated with services provided to a customer)];

- generate a response message containing the invoice document based on the
retrieved invoice data [see at least paragraph bridging columns 19 and 20 (e.g. Another
object may be invoked to format the data into a response message and return the
"get application list" request message is initiated at the client application)], the
response message being forward to the host for display of the invoice document via a
downloadable program [as illustrated in figure 5 and via step 1362 to display an online
invoice screen at the customer workstation)];

- forwarding the response message to the host for display of the invoice
document via a downloadable program [see at least column 8: lines 39-55 (e.g. As
illustrated in FIG. 2, after one of the DMZ Web servers 24 decrypts and verifies the
user session, it forwards the message through a firewall 25b over a TCP/IP
connection 23 to the dispatch server 26 on a new TCP socket while the original
socket 22 from the browser is blocking, waiting for a response)].

As per claims 22-25, 27-30, and 30-35, Barry discloses wherein the host
receives the response message via a web browser, the downloadable program being
executed within the web browser [see at least column 6: lines 34-39 (e.g. report
applications using a Web browser paradigm)],

- wherein the downloadable program is platform independent with respect to the
host [see at least column 2: lines 47-55 (e.g. The popularity of the public Internet
provides a measure of platform independence for the customer, as the customer

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can run their own Internet Web-browser and utilize their own platform connection
to the Internet to enable service)],

- wherein the host supports selecting figures presented in the invoice document
for performing an arithmetic operation on the selected figures [with reference to figure
56, the online invoicing server 1350 stores documents from various billing
systems and performs the various database queries and function calls in
response to requests received from the customer via the online invoicing proxy
1340. Particularly, the online invoicing server 1350 is responsible for tasks
including data collection, calculation, storage, and report generation)],

- wherein the host populates a products and date range field associated with a
user identifier [see at least column 15: lines 36-42 (e.g. All access to the suite of
applications is controlled by user identifiers (userids) and passwords)], the
products and date range field listing application services and time periods for which the
invoice document is available for presentation [as illustrated in figure 22, a flow
diagram illustrating an online invoicing back-end server process flow when
responding to client requests for document presentation)],

- wherein the host receives the response message via a web browser, the
downloadable program being executed within the web browser [as illustrated in figure 1 ,
a diagrammatic illustration of the software architecture component in which the
present invention functions. A first or client tier 10 of software services are
resident on a customer workstation 10 and provides customer access to the
enterprise system, having one or more downloadable application objects directed

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Art Unit: 3687

to front-end business logic, one or more backplane service objects for managing
sessions, one or more presentation services objects for the presentation of
customer options and customer requested data in a browser recognizable format
and a customer supplied browser for presentation of customer options and data
to the customer and for communications over the public Internet)],

- wherein the downloadable program is platform independent with respect to the
host [see at least column 7: lines 14-20 (e.g. The customer workstation includes
client software capable of providing a platform-independent, browser-based,
consistent user interface implementing objects programmed to provide a
reusable and common GUI abstraction and problem-domain abstractions)].

As per claims 37-39, Barry discloses: receiving the response message over a
secure communication session of a packet switched [as reference in figure 2, it is
understood that each Intranet server of suite 30 communicates with one or
several consolidated databases which include each customer's data management
information. For example, the Services Inquiry server 36 includes communication
with the enterprise's Customer Service Management legacy platform 40(a). Such
network management and customer network data is additionally accessible by
authorized management personnel. As shown in FIG. 2, other legacy platforms,
e.g. 40(d), may also communicate individually with the Intranet servers for
servicing specific transactions initiated at the client browser. The illustrated
legacy platforms 40(a))];

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- wherein the downloadable program is platform independent [see at least
column 7: lines 14-20 (e.g. The customer workstation includes client software
capable of providing a platform-independent, browser-based, consistent user
interface implementing objects programmed to provide a reusable and common
GUI abstraction and problem-domain abstractions)],

- highlighting figures on the image of the invoice document; and performing an
arithmetic operation of the highlighted figures [with reference to figure 56, the online
invoicing server 1350 stores documents from various billing systems and
performs the various database queries and function calls in response to requests
received from the customer via the online invoicing proxy 1340. Particularly, the
online invoicing server 1350 is responsible for tasks including data collection,
calculation, storage, and report generation)].

(10) Response to Argument

Appellant argues that Barry does not disclose the features in claims 26 and 31 .
The Examiner respectfully disagrees. Barry discloses a Web-based, integrated
customer interface system for data management. The customer interface system is
provided with a graphical user interface for enabling a user to interact with one or more
services provided by remote servers located in an Intranet/Extranet of an enterprise
providing products and services, and utilizes a Web paradigm to allow easy and
convenient access to all of the services from the user's perspective [see abstract].

Barry further discloses that the data management products and services
delivered to a client workstation having the integrated customer interface include: 1)

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Art Unit: 3687

report requester, report viewer, and report management applications enabling a
customer to request, specify, customize and schedule delivery of reports pertaining to
customer's data; 2) centralized inbox system for providing on-line reporting,
presentation, and notifications to a client workstation from one or more Intranet
application services over an Internet/Intranet network; 3) an operational data storage
system implementing a data mart approach for maintaining the data used for customer
reporting; 4) a trouble ticket tool enabling a customer to open and monitor trouble tickets
relating to products and services provided by an enterprise; 5) a Web-based invoice
reporting system allowing the customers access to their billing and invoice reports
associated with services provided to a customer; 6) an Internet "online" order entry and
administration service to enable customers to manage their accounts; and, 7) a system
for handling security and authentication requests from both client and server side of the
applications implementing the suite of data management products and services [see
summary of the invention].

Appellant also argues that Barry does not disclose any calculations performed on
figures selected from the invoice document. The Examiner respectfully disagrees. Barry
discloses via the Report Manager 250 includes and provides access to the metadata
which is used to tell the Report Requestor what a standard report should look like and
the "pick-list" options the user has in order for them to customize the standard report. It
is used to tell the Report Viewer client how to display the report, what calculations or
translations need to be performed at the time of display, and what further
customization options the user has while viewing the report.

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Appellant further argues that Barry does not disclose highlighting figures on an
image of an invoice document and performing an arithmetic operation on those
highlighted figures. The Examiner respectfully disagrees. Barry's report viewer
application 215 will also be able to accept messages telling it to display an image or text
that may be passed by one of the applications in lieu of report data (e.g., Invoice, etc.).
Barry also discloses that arithmetic operation can be performed via the online invoicing
server 1350.

(11) Related Proceeding(s) Appendix

No decision rendered by a court or the Board is identified by the examiner in the
Related Appeals and Interferences section of this examiner's answer.

For the above reasons, it is believed that the rejections should be sustained.
Respectfully submitted,
/Garcia Ade/
Examiner, Art Unit 3687
/Matthew S Gart/

Supervisory Patent Examiner, Art Unit 3687

Conferees:

/Matthew S Gart/

Supervisory Patent Examiner, Art Unit 3687
IF. Ryan Zeender/

Supervisory Patent Examiner, Art Unit 3627